Tuesday, 13 March 2012

Each of the two opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

On October 17, 2011, the Board summoned the parties to oral proceedings (OPS) to be held on December 20, 2011.

In a letter dated November 18, 2011, opponent 2 raised new grounds of revocation against the patent as maintained by the OD.

The Board would not admit those grounds into the proceedings, for the following reasons:

*** Translation of the French original ***

[2] In its letter of November 18, 2011, opponent 2 argues that the subject-matter of claim 1 as maintained extends beyond the content of the application as filed, and thereby violates A 100(c) EPC 1973. Even if the objection refers to the amendment of claim 1 carried out in the course of the opposition phase, which means that the case law of the Boards of appeal does not prohibit that such an objection be taken into account (see e.g. T 227/88 [3]; T 922/94 [2.2]), the Board nevertheless considers that this objection could most certainly have been filed at an earlier stage of the proceedings. As a matter of fact, as emphasized by the [patent proprietor], not only had this aspect not been mentioned during the opposition phase, but it had not even been raised by [opponent 2] in its statement of grounds of appeal.

Article 12(2) RPBA, however, stipulates that

“The statement of grounds of appeal and the reply shall contain a party’s complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on. …”

Therefore, the Board, exercising the discretionary power conferred to it pursuant to article 13 RPBA, and taking into account the fact that the admission of the new ground raised by [opponent 2] would run contrary to the principle of procedural economy to which this article refers, concludes that this ground is inadmissible.

It is true, indeed, as pointed out by [opponent 2] in the course of the OPs, that the Board has the duty to examine of its own motion whether the amendments of a patent in the course of opposition or opposition appeal proceedings comply with the requirements of the EPC. In the course of inter partes proceedings, however, this duty, which is a consequence of A 114(1), is limited to a prima facie examination of the amended documents, i.e. a sort of pre-examination that will lead to a genuine (véritable) examination of the amendments only if the [pre-examination] suggests that these amendments are indeed such that they create a presumption of non-conformity with the requirements defined by the EPC (see T 263/05 [7.15]).

In the present case, the additional feature concerning the bending of the first branch, which has been introduced by the [patent proprietor] during the opposition proceedings, exactly corresponds to a passage found in column 4, lines 52 to 57 of the application as published. The question of whether it is indeed possible to “detach” this effect of the structural feature of fitting (encastrement) of the free end 46 of the first branch 40 – which are indeed associated in the cited passage – belongs to a more substantive examination which clearly exceeds the limits of the prima facie examination that is required under the present circumstances. As a matter of fact, the question raised requires [the Board] to determine to which extent the skilled person would indeed have considered that the proposed geometry was the only one that could be envisaged or whether, to the contrary, he would have understood without further ado that a great number of alternatives were equally suitable.

Finally, the conclusion according to which the introduced feature indeed satisfies, at first sight, the requirements of the EPC, and in particular those of A 123(2), is supported by the fact that neither the OD nor the [opponents] had considered the proposed wording to be problematic when it was introduced. In this respect, the statement of [opponent 2] according to which it had only realized at a very late stage of the appeal proceedings that there was problem related to a possible generalisation of the subject-matter of the application, confirms the non-immediate nature of the objection raised.

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